I t is not uncommon for patent offices to issue defective parties - - PDF document

I

t is not uncommon for patent offices to issue defective

• patents. In many counties defective patents can be cor-

rected by post-issuance reexamination procedures. In most cases, this is done not by the patent office but by the

• courts. Traditionally in Japan, the Japan Patent Office (JPO)

had exclusive jurisdiction over patent invalidation proceedings by way of administrative oppositions and invalidity appeals. However, all that changed in April 2000, when the Japanese Supreme Court decided in Texas Instruments v Fujitsu that in cases where a court was hearing an infringement action, and where it concluded that it was highly likely that the patent was invalid (to the extent that the issue is fairly easy for the court to understand), the court could decline to enforce the patent, because any such enforcement would be a patent misuse. There have been many attempts to harmonize IP systems around the world through the WTO and TRIPs, WIPO, and the US-Japan Framework Talks of the 1990s. As a result of those efforts, particularly the US-Japan Framework Talks, on January 1 1996 Japan changed its opposition regime from a pre-opposition (kokoku) system to a post-grant opposition

• system. Later, on January 1 2004, Japan discontinued the

post-grant opposition system and merged it into the invalida- tion appeal procedure.

Reexamination in the US

The ex parte reexamination system became law in the US on July 1 1981. This allows either a challenger or a patent hold- er to seek reexamination of a patent based

• n patents or printed publications. Since

validity determinations came under the exclusive jurisdiction of Federal courts, deciding validity issues before July 1 1981 was a very expensive and lengthy process. However, while generally less expensive than litigation, ex parte reexamination does not give third parties an opportunity to participate in reexamination proceed- ings or to appeal the USPTO decision. In response to criticism on this issue, the American Inventors Protection Act 1999 extended the reexamination process by including an inter partes reexamination

• procedure. Thereafter, the inter partes

reexamination statute was amended to expand the scope of what qualifies for a substantial new question of patentability upon which either type of reexamination may be based. With the recent changes, parties can initiate a reexamination on the grounds that the examiner ignored or mistakenly examined a previously cited

• reference. This amendment essentially overruled the Federal

Circuit Court’s decision in In re Portola Packing, which held that “reexamination as enacted was carefully limited to new prior art, that is, new information about pre-existing technol-

• gy which may have escaped review at the time of the initial

reexamination of the patent application”.

The Japanese invalidation appeal

Changes to Japan’s patent law relating to challenging patent validity came into force on January 1 2004. The revised law abolished the post-grant opposition system and merged it into an “invalidation appeal” procedure. The aim of the change was two-fold: to prevent problems caused by the two co-exist- ing systems (unnecessary confusion and delay due to repeated challenges against the same patent by multiple oppositions, and later-filed invalidation appeals invoked by dissatisfied challengers); and to improve the system to meet the needs of a variety of users (for example, relaxing the time period allowed for oppositions, and expanding third party involvement). In Japan, the invalidation appeal is now the only procedure for

JAPAN: PATENT VALIDITY

How to challenge patent validity

Lawyers familiar with US rules on patent invalidation may find some familiar parallels, and some key differences, in the Japanese system. Yoshinari Kishimoto of Sughrue Mion provides a comparative guide

www.managingip.com May 2005 1

Yoshinari Kishimoto is the resident partner in the Tokyo office of Sughrue Mion, PLLC. His practice encompasses both patent prosecution and litigation. He also provides legal opinions on patent validity and infringement, negotiates licensing agreements and is active in the litigation of appellate matters. A Japanese national, Yoshinari Kishimoto represents Japanese companies across a wide range of electrical and mechanical industries, protecting and defending their patent rights. He has also created successful licensing programmes for a number of clients. In addition to being a registered US patent attorney, he is authorized to practice before the Japan Patent Office and the Tokyo High Court. Yoshinari Kishimoto’s profes- sional experience includes time as a patent examiner at the Japan Patent Office. Yoshinari Kishimoto received a degree in engineering from the University of Tokyo, an LLB from Keio University and an LLM in intellectual property law from the George Washington University.

PROFILE: Yoshinari Kishimoto

Under the new system, invalidation appeals may be instituted at any time during the life of a patent and in some cases even after it has expired

challenging the validity of a patent before the JPO. Under the new system, invalidation appeals may be insti- tuted at any time during the life of a patent and in some cases even after it has expired. Any person may file an invalidation appeal on public interest grounds, including patentability (first to file, statutory invention, industrial applicability, novelty, and inventive steps), written description and enablement, new matter, and claims that it is contrary to treaties and public

• rder. However, only an interested party can file an invalida-

tion appeal on non-public interest grounds, such as lack of inventorship or joint inventorship. Like inter partes reexamination in the US, the invalidation appeal proceeding in Japan is carried out before a body of JPO appeal examiners. Both the patent owner and the third party that requested the invalidation are allowed to participate at every stage of the proceedings. Once the invalidation appeal is requested, the patent owner is given an opportunity to submit a written reply and request for correction. The patent owner may request, within the designated time period under patent law, to correct the specification, claims or drawings (but can- not enlarge the scope of any claim of the patent). If a correc- tion is made, the third party may be given the opportunity (but there is no automatic right) to submit written comments on the amended claims. A three-person panel of the Board of Appeals and Trials will then decide the issue. Either losing party (the patentee or the requester) has the right to appeal to the Tokyo High Court. If the patent owner loses, he or she has the right to limit claims within 90 days of the Appeal Board decision.

New evidence

At the Tokyo High Court appeal stage, parties have great lati- tude to introduce new evidence such as newly uncovered refer- ences closer to the claimed invention. However, they cannot introduce new issues. If the invalidation appeal raises only nov- elty issues and the requester loses, the requester is not allowed to raise other issues, such as lack of enablement, before the

• Court. If there are new invalidity issues, the requester can sim-

ply file a new invalidation appeal that refers to such invalidity

• issues. To the extent that no res judicata issue is raised in the

later-filed cases, there is no limit on the number of invalidation appeals that can be made against a Japanese patent. In addition, it is always possible for parties (or the JPO on an ex-officio basis) to request that separate invalidation appeals are consolidated to avoid duplication of examination. Nevertheless, the invalidation appeal system could still place an unnecessary burden on a patentee plaintiff. Therefore, it may be very useful for a patentee to have several pending divi- sional applications so that they are able to assess their prosecution options over an important patent application.

Getting reexamination in the US

Reexamination in the US is a means by which any issued patent may be chal- lenged at any time during its period of enforceability, namely from the date it is

JAPAN: SPONSORED EDITORIAL

www.managingip.com May 2005

2

YOURS.

Protecting the most important ideas in the universe:

WASHINGTON, DC 202.293.7060 SILICON VALLEY 650.625.8100 TOKYO 011.81.3.5220.0200

www.sughrue.com

From office actions to civil actions, we protect the universe of ideas.

At the Tokyo High Court appeal stage, parties have great latitude to introduce new evidence such as newly uncovered references closer to the claimed invention

issued until six years after the patent expires. The Patent Statute provides for two forms of reexamination: ex parte reexamination, in which a reexamination proceeding, request- ed by any person or even anonymously, is conducted solely between the patent owner and the USPTO, and inter partes reexamination, in which third-party requesters are allowed to participate in the validity argument at every stage of the pro- ceeding. Any person, including the patent owner or a third party, can file a request for ex parte reexamination of any claim of any enforceable patent. The request for both ex parte reexami- nation and inter partes reexamination must clearly specify at least one substan- tial new question of patentability based on prior art patents and printed publications. The “substantial new question

• f

patentability” generally must be one that arises under 35 USC §102(a), (b), (d) or (e), or 35 USC §103. Unlike the Japanese invalidity appeal, questions of patentability based on other grounds may not be

• raised. For example, it is not possible to raise questions of

patentability under 35 USC §112 for lack of an enabling dis- closure, fraud, or for failure to disclose the best mode for prac- ticing the invention in an ex parte reexamination. Nor will questions of inventorship be considered during reexamination. However, a question of double patenting is a proper subject for reexamination. The USPTO will initially determine whether the request even raises a substantial new question of patentability affect- ing any claim of a patent. Once the request for reexamination is granted, the patent owner has an opportunity to respond and prosecution begins.

Understanding the ex parte process

After submitting the prior art and initial statement of the “pertinence and manner of applying the cited prior art to every claim for which reexamination is requested”, the ex parte requester is only allowed to file a reply if the patent

• wner files a patent owner’s statement. Thereafter, the ex

parte requestor has no further involvement in the ex parte reexamination proceeding. The patent owner alone argues the issue

• f

patentability with the USPTO examiner. Reexamination is conducted according to the regular reex- amination procedures. The patent owner can propose any claim amendments and new claims in order to distinguish the invention from the prior art, but such amendments cannot enlarge the scope of any claim of the patent. The patent

• wner alone may appeal to the USPTO Board of Appeals and

Interferences and then, if still dissatisfied, seek review from the Court of Appeals for the Federal Circuit. The ex parte requestor has no such right of appeal.

Ex parte versus inter partes

The initial requirements for inter partes reexamination are similar to those for ex parte reexamination. The primary dif- ferences between the two types of reexamination are dis- cussed below. Inter partes reexamination can be instituted by anyone on the basis of patents and printed publications where the pro- ceeding is conducted before a USPTO examiner with partici- pation by both the patent owner and the third party. Inter partes reexamination is only available to patents issued from an original application filed in the US on or after November 29 1999. Both parties have a right to participate during sub- sequent appeals to the USPTO Board of Appeals and Patent Interferences and the Court of Appeals for the Federal

• Circuit. Unlike ex parte reexamination, where it is unneces-

sary to reveal the identity of a third-party requester, inter partes reexamination requires the other party to reveal their real identity to allow the other party to determine whether or not privity exists. The key procedural difference between ex parte and inter partes reexamination is that in inter partes proceedings the third party requester is entitled to file written comments addressing the issues raised by the examiner or the patent

• wner’s response to them. A further important difference is

that both the patent owner and the third party requester may appeal an inter partes decision. If they are still dissatisfied, they may then seek review by the courts. The third party requester is estopped by statute from trying to prove invalidity in a subsequent civil action (for example, as a defence to a lawsuit for patent infringement) based on any grounds for invalidity that were raised, or even could have been raised, during the inter partes reexamination proceedings.

Weighing up the two systems

There are a number of differences in the way that post-grant validity is reviewed in Japan and the US. Some of the most important of these are the initial determination of issue by a director (that a substantial new question of patentability even exists); the grounds for invalidity; the estoppel process; and ex

• fficio examination.

The Japanese invalidity appeal process uses a collegial body

• f three or five appeal examiners who conduct the examina-

tion and to whom the requester may submit a variety of evi- dence other than patents or printed publications. Because of this, this author believes that the examination tends to be more accurate and impartial than the US reexamination pro-

• cedure. However, Japanese invalidation appeals tend to take

longer and cost more than the US reexamination procedure. Thus, Japanese invalidation appeals can enhance the reliabili- ty of an issued patent, while the US reexamination procedure can settle invalidity disputes more quickly and cheaply. It is interesting to note that a number of US bodies, includ- ing the USPTO (as part of its 21st Century Strategic Plan) and the Federal Trade Commission (in a report published in October 2003) have recently recommended the US introduce a post-grant opposition system into its post-grant validity review process.

JAPAN: PATENT VALIDITY

www.managingip.com May 2005 3

Japanese invalidation appeals tend to take longer and cost more than the US reexamination procedure